Israel is a member of the Lisbon Convention for the Appellation of Origin. This is an international convention beloved of the French and frowned upon by the common law countries. Essentially food and drink associated with certain places is entitled to wider protection than mere trademark protection, so that only Scotland can make Scotch Whiskey. Only France can make Champagne and Cognac. Parmesan cheese and hams must come from the Parmesan region of Italy, and so on.

There are now two Israeli whiskey producers. Israel makes Kosher bubbly wine and brandy and a very wide range of cheeses that mimic English, French, Italian, Dutch and Greek types. The labeling is carefully controlled in accordance with the rules.

Israel boasts one Appellation of Origin: Jaffa for citrus fruits.

Calling something Jaffa, Jaffas, or in Hebrew יפו, יבא, יפאס is not merely a trademark infringement, but also infringes the special law governing this appellation of origin “The Law for Protecting Origins and Indication of sources 1965” gave special protection for Jaffa and variant spellings for citrus fruits. Subsequently, special amendments to the Trademark Ordinance in 1968 widened the protection of the Jaffa mark to prevent its usage for a wider range of goods, and forbade marks that include the word Jaffa as only part of the mark. The amendment to the trademark ordinance takes this protection very seriously, and instead of merely providing financial remedies, prescribes incarceration for infringers.

Back in the Sixties, Israel was a bananaan orange republic. The largest export sector was fruit and vegetables and oranges were the flagship product. The posters alongside, used by ELAL – Israel’s national airline gives an indication of the importance and symbolism of the orange in that era.

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin.

Yehuda Malchi tried to register Israel Trademark Application Numbers 20542 and 220581 for OLD JAFFA, for preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively. Israel trademark no. 237678 covering soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 had previously issued without opposition. In an action combined with an opposition by the Council for Producing Plants and Their Marketing to Israel Trademark Application Numbers 20542 and 220581 , the Israel trademark 237678 (Old Jaffa) was canceled. The ruling may be found here.

Having appealed the Israel Patent Office ruling and that of the District Court, Yehuda Malchi appealed to the Israel Supreme Court.

Judge Hendel’s ruling included an interesting side comment in which he noted that Chief Rabbi Kook, who was the Chief Rabbi of Jaffa and the surrounding agricultural villages from 1904 until the outbreak of World War 1, had backed a campaign to promote using Jaffa etrogs (citrons) for the Sukkot ritual, rather than those from Korfu and Italy, which held much of the European market. Judge Handel thus argued that Israel was traditionally blessed with citrus fruit and that Jaffa was the hub of the trade a hundred years ago.

Hendel also noted that very little of the sprawling urban conurbation around Jaffa is devoted to agriculture today, but since the amendment to the Trademark Ordinance explicitly prevents use of Jaffa as part of a mark, the phonetic or visual similarity between JAFFA and OLD JAFFA is not relevant. He thus upheld the District Court’s ruling.

COMMENT

I am naturally formalistic (which is considered a dirty word in Israeli legal circles), and generally think that where the democratically elected legislative passes a clear law, the judges should follow that law. I am against judicial activism which I see as undermining the Knesset. (That is not to say that recent government attempts to prevent charges being brought against active ministers, to prevent the Prime Minister from being indicted for corruption are the finest examples of parliamentary legislation).

Nevertheless, I think that Judge Hendel could have and should have struck down this law providing wide and special protection for Jaffa oranges. The reason why is not merely that the brand does not indicate oranges from the Jaffa region grown by Jewish agriculturists on Kibbutzim, but rather that it does not indicate oranges grown in the contested region of Israel – Palestine at all! In order to provide year round supplies to world wide markets, oranges grown in South Africa and Australia are sold under the Jaffa brand. Thus the unique and distinctive taste of Jaffa oranges is not a result of the terroir of the Holy Land at all. This travesty means that BDS supporters are not merely depriving Arab orchard owners with Thai foreign workers of their livelihood in an attempt to harm Israel politically, but are also harming the black workers in townships around Johannesburg.

Since the Council for Producing Plants and Their Marketing does not restrict usage of the mark to Israel grown oranges, why shouldn’t the special designation be cancelled?

In fairness to Judge Hendel however, we note that Yehuda Malchi was not represented and suspect that the sad state of affairs described above is unknown to him.

For the record, we note that it is ill-advised to appeal to fight legal battles, including submitting Appeals to the Supreme Court without legal representation.

Israel Trademark Application Number 278777 is the national phase entry of International Trademark No. 1232972 filed under the Madrid Protocol. The mark is shown above.

The Application covers Watches of Swiss origin in class 14 and was submitted by Chron AG.

The Israel Trademark Department considered the mark non-registerable for two reasons. There is a registered Israel Trademark, No 88839 for “Swiss Army” for the same goods, and the mark is confusingly similar to pending Israel Trademark Application Numbers 260989 and 273129 “Swiss Military”to Schweizerische Eidgenossenschaft v.d. Armasuisse Eidg. Departement für Verteidigung, Bevölkerungsschutz und Sport, for perfumes and other toiletries in class 3, but also for watches in class 14, and so the correct way to proceed is via a competing marks proceeding under Section 29. Chrono AG transferred the Application to Schweizerische Eidgenossenschaft (the Swiss Army) and the section 29 objection was rendered moot, however the similarity to 88839 remained and the Applicants failed to overcome the objection under Section 11(9) that there was a likelihood of confusion.

During the Examination, the Applicant submitted evidence to support their claims, including a letter by Mr Peter Emch, the Chief Legal Counsel to the effect that the applicant is part of the Swiss Defense Department of the Swiss Government and is the body entitled to protect military trademarks, including Swiss Army, Swiss Military and Swiss Air Force.

Deputy Commissioner Ms Jacqueline Bracha noted that the Applicant claimed that there is a difference between Swiss Army and Swiss Military, since the term military is broader than army. The two marks look and sound different and the only commonality is the word Swiss which is a geographical adjective.

During the hearing it transpired that the word ‘military’ means ‘of or relating to the army’ and both the owner of the mark and the applicant use their terms together with the cross that is the emblem of the Swiss Federation and which further increases the likelihood of confusion.

Martin Shneider, Legal Counsel to the Swiss Army submitted an affidavit stating that it is the Swiss Army who are authorized by the Swiss Government to both the pending application and the issued mark to the third-party. The third party received a license from the Swiss government to register the term SWISS ARMY for watches and knives that are made in Switzerland and conform to quality standards.

In the circumstances, Ms Bracha did not think that the consumers would be confused regarding the source of goods carrying the requested mark or the issued mark as both are essentially owned and managed by the Swiss Army. Consequently the mark is registerable.

I think that in this case, the registered owner of the Swiss Army mark 88839 (Swiss Army Brand LTD, a Delaware Corporation), should have been contacted to confirm Mr Emch’s story, and that mark should be recorded as owned by Swiss Army and exclusively licensed to Swiss Army Brand LTD.

Back in February 2011, Judge Stumer of the Petach Tikveh District Court ruled that the implementation of an idea to collect DNA of dogs to enable prosecution of their owners who have fallen foul of the law by their pets fouling pavements (sidewalks) was copyright infringement. My original posting on the decision, together with an analysis of what was wrong with it, may be found here.

Judge Noam Solberg has no issue with the factual finding of the District Court that the idea originated with Zisso, the original plaintiff and defendant on appeal, but on a matter of Law confirms that implementation of an idea is not copyright infringement. the implementation of the idea, if protectable at all, might be protectable by a patent if considered novel, inventive and useful, but as Zisso didn’t file a patent application, the issue is moot and the idea is now in the public domain. Attempting to claim that there is unjust enrichment or an assumed contract is an illegitimate attempt to widen the charges on appeal. Similarly, attempts to claim infringement of the original PowerPoint presentation by the Petach Tikveh Municipality using a similar presentation is widening the original claim.

Readers will be pleased to learn that the Israel Supreme Court has reversed what may be the worst IP related decision that an Israel Court has ever issued.

Neil Wilcoff has recently been blogging about various courts getting patent law wrong. It seems that Judge Stumer isn’t the only Judge to make an embarrassing mistake. Nevertheless, one wonders if there isn’t a case to be made for specialist IP courts?

In a detailed ruling concerning Israel Trademark Application No. 193876, “Really Italy” (with minimal styling) the Deputy Commissioner of Patents affirmed a decision of the Examiner and ruled that since Italy is associated with the fashion industry, particularly clothing and shoes, the mark is either descriptive or misleading, depending on whether the goods sold originate in Italy or not.

The Deputy Commissioner quoted from his recent Ein Gedi decision to emphasise the point.

COMMENT

The decision is clearly correct. It would be unacceptable to allow the first to register marks of this sort, to prevent others from describing their goods in the same way. Likewise, if such a mark were allowed and was used to send clothing not originating in Italy, that would be misleading to the public.

Moroccanoil is an Israeli company that manufactures hair products from Argan oil, which is apparently used in Moroccan cooking, and is native to Morocco.

Determining the brand to be descriptive as to origin, the Deputy Commissioner of Patents and Trademarks at the Israel Patent Office has rejected trademark numbers 205142 and 205143 for the stylized name in English and for Moroccan Oil in Hebrew.

The Deputy Commissioner rejected arguments that other countries have registered the mark, and that the product was developed here.

Comment

The company Morrocanoil does not sell oil, but hair products containing argan oil. The name, even in Hebrew, is therefore not descriptive in the sense that something labelled as Golan Wine or Cheddar Cheese is.

Nevertheless, I consider the decision reasonable, but somewhat arbitrary in that it is not totally consistent with other Israel patent office decisions. Indeed, I fail to see any trend at all in cases like this. The arbitrary nature and the fact that other countries rule differently should strike a warning bell to Israeli companies planning on filing via the Madrid Protocol. A decision like this in the registrant’s national trademark office could invalidate marks filed elsewhere. The moral is that come September 1, with Israel implementing the Madrid Protocol, it will be necessary to seek expert advice as to whether to go the potentially cheaper Madrid route, or whether it would be safer to file separate applications directly in each jurisdiction.

Another question of interest, is whether it ever makes sense to choose a place name as a mark? Think what aggravation could have been saved if neither Budweiser beer had chosen the place name, but had given an arbitrary name to their beer like Mudwise or something.

Possibly in retaliating to the United States’ infamous annual US Special 301 Report, the European Commission has released a report finding fault with a number of American IP practices.

In the report: United States Barriers To Trade And Investment For 2008[pdf] Europe calls the pot black and charges the US with having failed to bring its Copyright Act into compliance with World Trade Organization rules on IP since radio music can be played in pubs and clubs without paying royalties (the Irish music case). According to the report, European producers and performers “do not enjoy broadcasting rights granted to the US” as a result.

Another “particularly problematic” issue is geographical regional names, with a number of European wine names being considered “semi-generic” by the US.

Another issue of concern is the US IP boycott of Cuba, where, to pressurize the Cuban government, the trademark for Havana Club rum is considered unenforceable, contrary to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights,TRIPS.

According to the report, the US government frequently fails to comply with Article 31 of TRIPS which requires governments that use patents to promptly inform the patent right holders when governments use patented technology.

On recognising the first to file a patent application (like the rest of the world) rather than first to invent, the US discussion of patent reform is “going in a good direction,” the EU said.

Another cause for concern is US provisions on plant varieties in the Plant Patent Act which “seriously impede trade in breeding material for ornamental plants.”

For good measure, software patentability and the first to invent as a pose to first to file were also examined.

President of the Lebanese Industrialists’ Association, Fadi Abboud, has argued that hummus is a Lebanese product.

Apparently, Talal Abu-Ghazaleh, chairman and founder of Jordan-based IP group Talal Abu-Ghazaleh Organization (TAGorg), has stated to World Trademark Review that “If it is made using Lebanese ingredients and a Lebanese recipe it should be sold as Lebanese hummus not Israeli hummus.”

“I’m not claiming or assuming that Lebanon has ownership of the production itself, rather that it has rights in the geographic name.”

Thus according to my learned, Jordanian colleague, it would appear that either Hummus is a Lebanese place name, or the problem is that Israel has been marketing Lebanese Hummus.

Ms. Hoda Barakat , managing partner and head of the IP department at Dubai-based Al Tamimi & Company (presumably no relation to the Baraket at Reinhold Cohn’s Law Office?), notes that although many Arab states do not have specific GI laws, GIs are often protected as certification marks under trademark legislation.

Abu-Ghazaleh is apparently working to harmonize and strengthen the current systems, campaigning for more robust IP rights across the Arab world.

As Abu Ghazaleh is based in Jordan, a state with diplomatic relations with Israel, here’s a suggestion: why not work to normalize trade relations with Israel? Particularly, work to allow Israeli companies to register trademarks in Arab states and international companies to do so without having to declare fulfilling the Arab boycott. Then, claims for special rights for national dishes and the like, could be examined in a normalized business atmosphere.